A Start-Up Takes On Procter & Gamble Over a Name

Andrew Sullivan for The New York TimesChristy Prunier said she started her line of skin care products for preteenagers when her daughter, Willa, said she was tired of using soap meant for little children.

A light bulb went off for Christy Prunier while giving her 8-year-old daughter, Willa, a bath. The girl complained that she didn’t like “babyish” soaps anymore.

Ms. Prunier got to work, and after three years of research, introduced a line of skin care products aimed at preteenage girls. The name? Willa, of course.

With lip balm, facial masks and lotions in whimsical purple and white bottles, Willa caught the attention of Target, J. Crew and trendy Upper East Side boutiques like Blue Tree, owned by the actress Phoebe Cates.

Procter & Gamble noticed Willa, too, but wasn’t so enthusiastic. It sent Ms. Prunier a letter demanding that she drop the name Willa, or it would resort to “lengthy and expensive alternative measures.” Willa, contends Procter & Gamble, sounds too much like Wella, its own brand of hair care products, and consumers would be confused.

“There’s no chance here that anyone is going to be confused,” said Ms. Prunier, 43, a former film executive who lives in suburban Connecticut. “They have nothing to lose. They are intent on shutting me down.”

Andrew Sullivan for The New York TimesProcter & Gamble contends that Willa, Christy Prunier’s skin care line, is too similar to the name of its Wella hair care products.

Ms. Prunier is not the first small-business owner to claim harassment by a large corporation over its name. After some small businesses complained about what they call “trademark bullying,” Congress mandated a study of the issue.

In introducing the study, which was released in April, Senator Patrick Leahy, Democrat of Vermont, said, “I am concerned that large corporations are at times abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses.”

The senator noted a “spurious” trademark claim from 2009 against a Vermont business, Rock Art Brewery. Hansen Beverage, the makers of Monster Energy drinks, objected to the brewery’s Vermonster beer. Hansen dropped its claim provided Vermonster was not sold as an energy drink.

In another case, from last August, the Maya Archaeology Initiative fought claims by Kellogg that a bird depicted in the organization’s logo is too similar to Toucan Sam, the bird on the Froot Loops cereal box. The two sides have since reached an agreement allowing the Mayan group to use its mark.

Facebook, meanwhile, has sued Teachbook.com, a Web site for teachers, for using the word “book” in its name. A Facebook spokesman declined to comment.

“The big corporations often send these cease-and-desist letters and issue threats regardless of the merits of the claims,” said Erik M. Pelton, a trademark lawyer in Alexandria, Va. “They then use their endless resources and legal firepower to get the result they want: the small businesses often go away because they can’t afford to fight back.”

But Alan C. Drewsen, executive director of the International Trademark Association, said, “Just because trademark owners are big doesn’t mean they’re bullies. Major brands must have a carefully considered enforcement strategy in order to protect their intellectual property.”

Indeed, the government’s study found that evidence of widespread trademark bullying was inconclusive, suggesting that disputes “may be best addressed by the existing safeguards in the litigation system.”

The report effectively killed any momentum for a legislative fix. Instead, regulators have urged the private sector to provide free or low-cost legal counsel to small businesses engaged in trademark disputes, a remedy that some small businesses and lawyers have criticized as being woefully inadequate.

Like many large corporations, P.&G. fiercely protects its intellectual property, and company lawyers routinely search for potential conflicts. Procter’s lawyer contacted Ms. Prunier in January after she received government approval to use the Willa name.

For Ms. Prunier, the trademark approval was the end of a nearly three-year process of working with chemists and dermatologists to develop the Willa line. Her goal, she said, was to provide a natural alternative to the “Miley Cyrus, made in China, bubble-gum flavor products” currently on the shelves.

For instance, among her products is a face wash that “is meant to smell like a girl in the summertime who takes a shower outside,” she said.

The natural personal care category is big business, estimated at $5 billion a year in sales in the United States alone, according to Organic Monitor. A few one-time start-ups have made a killing, too; Tom’s of Maine was purchased by Colgate-Palmolive for $100 million in 2006, and Burt’s Bees was bought by Clorox for $925 million a year later.

Ms. Prunier said she developed Willa with help from her baby sitter, Francesca Harrell, a recent graduate of the Parsons School of Design, and Willa herself. Focus groups consisted of Willa’s classmates from the Spence School, a private school on the Upper East Side, who sampled products and jotted their reactions on a clipboard. (The family moved to Connecticut this summer.)

Ms. Prunier was picking Willa up at Spence on Jan. 31 when she received a call from her trademark lawyer informing her of the Procter cease-and-desist letter. P.&G. gave her less than two weeks to confirm that she was “taking the necessary steps to comply with our client’s demands.”

Instead, she sought advice from Willa’s best friend’s father, a lawyer, who urged her to stand up to Procter & Gamble. Eventually, Ms. Prunier sued, asking a court to rule that Willa does not infringe upon the trademark for Wella, a German hair care brand that P.&G. acquired in 2003 for $7 billion.

Procter has since demanded the hard drive from Ms. Prunier’s computer to search for incriminating documents. And it issued subpoenas to Ms. Prunier’s potential customers, including Ms. Cates, according to Ms. Prunier’s lawyer.

“If you were the owner of this boutique, why would you want to get involved in this fight?” said William A. Brewer III, Ms. Prunier’s lawyer. “It basically stops the forward thrust, or opportunity, for our client.”

Jennifer J. Chelune, a spokeswoman for Procter & Gamble, said, “We believe that a range of hair and related products called ‘Willa’ would be too close to our Wella brand name. This risks consumer confusion and is important to know that it could set a precedent that other companies could exploit to try and infringe our Wella trademark.”

She said that the company’s trademarks were “how we build consumer trust in our brands over many years” and needed to be protected. “Especially in today’s Internet world, the size of the company makes little difference.”

The case goes to trial in Federal District Court in Manhattan on Oct. 12. It is likely to hinge on whether a jury finds a “likelihood of confusion” among customers of Willa and Wella, a rather squishy legal standard that focuses on factors including the similarity of the marks and products, and whether they are sold in the same channels.

Ms. Prunier argues that Wella sells only hair care products, while Willa’s line is broader. In addition, she said Wella is primarily sold in hair salons, while Willa would be offered in retail stores and boutiques.

Given the strain of the lawsuit and the estimated $750,000 in legal fees, Ms. Prunier said she had thought about changing the name. But she said the story of Willa was crucial to the brand and any other name lacked “authenticity.”

Willa’s middle name, Price, doesn’t work either. “The first thing I think of when I think about ‘Price’ is cost,” Ms. Prunier said.

For Willa, now a smiley 11-year-old with braces, the family start-up has provided all sorts of lessons about the business world, not all of them pleasant. As she watched her mother break down in tears during an interview at her kitchen table, Willa struggled to maintain her composure.

“I think it’s going to work out,” Willa said. “It’s just a lot of stress for my mom.”